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FURTHERREADING 23Doctrine of equivalents A doctrine by which, even if a
device or process does not exactly match the claims of
a patent, the device may still infringe the patent if the
differences are insubstantial.
Element Although “element” and “limitation” are some-
times used interchangeably, the term “element” is used
more frequently by the courts to refer to aspects of
an alleged infringing device or method. In an infringe-
ment case, the elements of the alleged infringing device
or method are compared with the claim limitations of
the patent allegedly being infringed. Note, however,
that 35 U.S.C.§112 refers to both an “element in a
claim” (sixth paragraph) and “limitations of [a] claim”
(fourth and fifth paragraphs).
Independent claim A patent claim that does not incor-
porate any other patent claim by reference.
Laches An equitable principle whereby a party is
estopped (not allowed) from bringing a lawsuit after an
unreasonable or unexplained delay which has a detri-
mental effect on the party being sued.
Limitation Part of a claim that defines a particular as-
pect of the invention. Every claim has at least one lim-
itation, and most claims have two or more limitations.
Means plus function A particular claim limitation may
be written in “means plus function” language, wherein
the claim is a means or a step for performing a specified
function, without reciting particular structure, mate-
rial or acts, which are thus construed to be those de-
scribed in the specification (and equivalents). “Means
plus function” claim elements are specifically autho-
rized by 35 U.S.C.§112, sixth paragraph.
Nonobvious One of the basic requirements in obtaining
a patent is that the invention be nonobvious to one of
ordinary skill in the particular art concerned, in view
of the known (prior) art.
Novelty One of the basic requirements in obtaining
a patent is that the invention be novel. Legally, this
means that the invention must not be barred by any of
the conditions stated in 35 U.S.C.§102.
Patent A grant for a fixed term that gives the holder
certain rights to exclude others from practicing the
patented invention as claimed. Title 35 of the United
States Code provides the patent law statutes.
Patent Cooperation Treaty (PCT) A treaty under
which an applicant of a member country can file a sin-
gle patent application that may designate one, many, or
all of the member countries. A PCT patent application
is an application. The PCT does not grant patents.
Prior art The accumulated knowledge of those skilled in
the particular art concerned, which can bar issuance of
a patent if the claims are not novel or nonobvious in
view of the prior art. Prior art that can bar issuance
of a patent in the United States is defined in 35 U.S.C.
§102.
Prosecution The process of obtaining a patent, from the
filing of an application to the issuance of the patent (or
abandonment of the application).
Prosecution laches An equitable principle in which un-
reasonable delay during prosecution of a patent appli-
cation, together with harm to another party caused by
the delay, can result in unenforceability of the issued
patent.Provisional application A patent application desig-
nated as such that is never examined but serves to pro-
vide a priority date.
Provisional rights The rights of a patent owner to a rea-
sonable royalty for an infringing device or method, cov-
ering the period between publication of a patent appli-
cation and the granting of the patent with substantially
identical claims as those in the published application.
U.S. Patent and Trademark Office (USPTO) The U.S.
agency authorized to grant and issue patents and to
facilitate the registration of trademarks.CROSS REFERENCES
SeeCopyright Law; Legal, Social and Ethical Issues; Trade-
mark Law.REFERENCES
American Inventor’s Protection Act of 1999, Pub. L. No.
106–113.
Beauregard, G. M. (n.d.)U.S. Patent No. 4,962,468.Wash-
ington, DC: U.S. Patent and Trademark Office.
Diamond v. Chakrabarty, 447 US 303, 206 USPQ 193
(1980).
Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 95-1066 (Fed. Cir., 1999).
Holmes Group, Inc. v. Vornado Air Circulation Sys-
tems, Inc. (U.S. Supreme Court, 2002), (slip opinion
at http://www.supremecourtus.gov/opinions/01pdf/01–
408.pdf ).
J. E. M. AG Supply, Inc. v. Pioneer Hi-Bred International,
Inc. (99-1996) 200 F.3d 1374 (2001).
Kraft Foods, Inc. v. Int’l Trading Co., No. 99-1240, 2000
U.S. App. LEXIS 1994, 2000 WL 156556 (Fed. Cir.
February 14, 2000).
Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989).
Platz, Axel et al.,U.S. Patent No. D453,769.Washington,
DC: U.S. Patent and Trademark Office.
Slimbach, Robert J., et al.,U.S. Patent No. D454,582.
Washington, DC: U.S. Patent and Trademark Office.
State Street Bank & Trust Co. v. Signature Financial
Group, 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998).
Patents, 35 U.S.C. (July 19, 1952).
Symbol Technologies, Inc. et al. v. Lemelson Medical, Ed-
ucation & Research Foundation, Limited Partnership,
277 F.3d 1361 (Fed. Cir. 2002).
United States Patent and Trademark Office. (2001).
Guidelines for examination of design patent applica-
tions for computer-generated icons. In Manual of
Patent Examining Procedure(8th ed.). Retrieved Febru-
ary 22, 2003, from http://www.uspto.gov/web/offices/
pac/mpep/index.htmlFURTHER READING
Books
Albert, G. P., Jr., Laff, W., &; Laff, S. (1999).Intellec-
tual property law in cyberspace.Washington, DC: BNA
Books.
Chisum, D. (2002).Chisum on patents, a treatise on the
law of patentability, validity and infringement.Newark,